Sony Music Entertainment Inc et al v. Clark-Rainbolt
Filing
48
MEMORANDUM OPINION & ORDER: The Court determines that Sony's Motion (ECF No. 33 ) should be and hereby is GRANTED in part and DENIED in part. (Ordered by Judge Mark Pittman on 3/27/2024) (saw)
UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF TEXAS
FORT WORTH DIVISION
SONY MUSIC ENTERTAINMENT,
INC., ET AL.,
Plaintiffs,
v.
No. 4:23-cv-00275-P
DANTREAL DAEVON CLARK-RAINBOLT,
Defendant.
MEMORANDUM OPINION & ORDER
Before the Court is Plaintiffs’ Motion for Damages. ECF No. 33.
Having considered the Motion, briefing, and applicable law, the Court
determines the Motion should be and hereby is GRANTED in part and
DENIED in part.
BACKGROUND
Plaintiffs Sony Music Entertainment (“SME”) and Sony Music
Publishing (US) LLC (“SMP”) (collectively, “Sony”) sued Defendant
Dantreal Daevon-Clark Rainbolt for copyright infringement in March
2023. Under the name “Trefuego,” Defendant released the song 90mh,
which impermissibly sampled Sony’s copyrighted work. 1 After multiple
vain attempts to effectuate service, the Court allowed Sony to serve
Defendant via social media direct messaging. Even after Sony perfected
service, Defendant evaded communications related to this lawsuit and
ignored the Court’s orders.
Sony moved for judgment on the pleadings last October, which the
Court granted in November. In doing so, the Court found Defendant
liable for copyright infringement as set forth in Counts I-VI of Sony’s
1The
relevant work is Reflections by Japanese composer Toshifumi Hinata.
SME owns copyrights in the sound recording; SMP’s copyrights cover the
composition itself. See generally U.S. COPYRIGHT REGISTRY, NOS.
SR0000941927, PA0002379996.
Complaint. The Court then ordered Sony to file an appropriate motion
for damages, fees, and costs. Sony did, filing the present Motion on
December 29, 2023. Appearing pro se, Defendant filed a liberally
construed brief in opposition to Sony’s Motion on January 10, 2024.
LEGAL STANDARD
Owners of an infringed copyright are entitled to “the actual damages
suffered . . . as a result of the infringement, and any profits of the
infringer that are attributable to the infringement and are not taken
into account in computing the actual damages.” 17 U.S.C. § 504(b); see
also Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 433–
34 (1984) (“The Copyright Act provides the owner of a copyright with a
potent arsenal of remedies against an infringer of his work, including an
injunction to restrain the infringer from violating his rights, the
impoundment and destruction of all reproductions of his work made in
violation of his rights, a recovery of his actual damages and any
additional profits realized by the infringer or a recovery of statutory
damages, and attorneys fees.”). Infringement damages are always
assessed “within the broad discretion of the trial court.” Broadcast
Music, Inc. v. Tex Border Mgmt., Inc., 11 F. Supp. 3d 689, 697 (N.D. Tex.
2014) (Ramirez, M.J.).
The Court also has discretion to “allow the recovery of full costs”
incurred by the prevailing party. 17 U.S.C. § 505. There is “no precise
formula” for awarding fees or costs, but courts routinely consider several
factors: “frivolousness, motivation, objective unreasonableness (both in
the factual and in the legal components of a case) and the need in
particular circumstances to advance consideration of compensation and
deterrence.” Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 n.19 (1994); see
also Stygian Songs v. Johnson, 776 F. Supp. 2d 233, 238 (N.D. Tex. 2011)
(Means, J.) (collecting cases) (noting the Court must award remedies
that “compensate for past infringements” and “guard[] against future
infringements” while recalling that “[t]he purpose of copyright law is to
promote and protect creativity”). As with damages, the Court has “broad
discretion” to determine an appropriate award of fees or costs. Kirtsaeng
v. John Wiley & Sons, Inc., 579 U.S. 197, 208 (2016).
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ANALYSIS
Sony seeks $802,997.23 in damages, $2,230.67 in costs, a permanent
injunction against future infringement of its copyrights, and a
percentage of future profits attributable to Defendant’s infringement.
See ECF No. 33 at 10–17. The Court takes each request in turn.
A. Sony is entitled to $802,997.23 in damages.
The Copyright Act entitles Sony to either statutory damages or
actual damages, plus any additional profits traceable to Defendant’s
infringement of the copyrighted work. See 17 U.S.C. § 504(b); Sony, 464
U.S. at 433–34. To evaluate actual damages, courts typically start by
asking what the copyright owner would have hypothetically charged the
infringer had the infringer attempted to license the work. See MGE UPS
Sys., Inc. v. GE Consumer & Indus., Inc., 622 F.3d 361, 367 n.2 (5th Cir.
2010); Straus v. DVC Worldwide, Inc., 484 F. Supp. 2d 620, 648 (S.D.
Tex. 2007) (Rosenthal, J.) (collecting cases). In terms of a hypothetical
license fee, Sony says “SME would have required an up-front $10,000
payment plus 20% of revenues, and SMP would have required an
upfront $2,500 payment plus 50% ownership in the copyright to the
‘90mh’ musical composition.” ECF No. 33 at 6. But that’s only part of the
picture. To evaluate Sony’s total harm from Defendant’s infringement,
the Court may also consider “any profits of the infringer that are
attributable to the infringement and are not taken into account in
computing the actual damages.” 17 U.S.C. § 504(b).
“If the copyright owner chooses to claim infringer’s profits, the
copyright owner is required to present proof only of the infringer’s gross
revenue, and the infringer is required to prove his or her deductible
expenses and the elements of profit attributable to factors other than
the copyrighted work.” MGE UPS Sys., 622 F.3d at 366–67. Beyond the
hypothetical license fee discussed above, Sony is entitled to profits from
the $700,497.23 in revenue generated from 90mh. See id.; see also ECF
No. 34 at 67–69. And that’s a conservative figure based only on the hard
data Sony uncovered. Given Defendant’s unresponsiveness to written
discovery requests, Sony had to piece together revenue for the infringing
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work via subpoenas to third parties and investigations of relevant
streaming services. See ECF No. 34 at 5.
The record establishes at least $700,497.23 in revenue generated by
the infringing work—$686,418.41 paid to Defendant and $14,078.82
held by his third-party distributor after the distributor learned of Sony’s
lawsuit. See ECF No. 34 at 67–69. Aggregating these amounts with
SME’s and SMP’s lost license fees, Sony’s breakdown is straightforward:
Id. The second-row figure represents “the gross revenues generated by
the sound recording, less SME’s lost license fee,” while the third-row
figure represents “SMP’s $2,500 up front fee + SMP’s 50% share of the
estimated $200,000 in U.S. Spotify & Apple publishing revenue.” Id. at
6, n. 2–3.
Defendant’s response brief did not meaningfully contest Sony’s
damages computation, much less identify applicable offsets. See ECF
No. 39; see also MGE UPS Sys., 622 F.3d at 366–67 (requiring infringers
“to prove . . . deductible expenses and the elements of profit attributable
to factors other than the copyrighted work”). While Defendant makes a
compelling case that his infringement was unwilful, see ECF No. 39 at
2–3, willfulness only warrants a reduction where the copyright holder
seeks statutory damages, rather than actual damages. See Feltner v.
Columbia Pictures Tel., Inc., 523 U.S. 340, 343 (1998); see also 17 U.S.C.
§ 504(c). Because the record establishes Sony’s actual damages and
Defendant’s liability is beyond dispute, the Court GRANTS Sony’s
requested damages in their entirety. The Court now turns to their
request for costs.
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B. Sony is entitled to $2,230.67 in costs.
The Copyright Act also entitles Sony to attorneys’ fees and costs. See
17 U.S.C. § 505. Because Defendant’s infringement predates the
registration of Sony’s copyrights in Reflections, Sony does not seek its
attorneys’ fees. See ECF No. 33 at 6 n.1. For costs, the record shows Sony
has incurred $2,230.67 in taxable costs over the course of this litigation.
See ECF Nos. 33 at 14; 34 at 5. In its discretion, the Court may “allow
the recovery of full costs” to the prevailing party in an infringement case.
17 U.S.C. § 505. To determine the propriety of such costs, the Court
considers the following non-exhaustive factors: “frivolousness,
motivation, objective unreasonableness (both in the factual and in the
legal components of a case) and the need in particular circumstances to
advance consideration of compensation and deterrence.” Fogerty, 510
U.S. at 534 n.19. Those factors support full recovery of Sony’s costs here.
In this case, Sony pursued a reasonable, non-frivolous claim to
vindicate infringement of its copyrighted work. See ECF No. 25. Some
may query the wisdom of pursuing a claim against a relatively small
fish like Trefuego, but that fact does not render Sony’s motivation
improper or their lawsuit unreasonable. See generally Johnson, 776 F.
Supp. 2d at 237–39 (examining the scope and profitability of the
infringing work to determine a claim’s reasonableness). In fact, the only
unreasonable behavior in this case was Defendant’s, as his consistent
attempts to evade service and eschew meaningful communications
stymied case progress and drove up Sony’s costs. See ECF No. 18. The
Court hopes this serves as a lesson for Defendant and similarly situated
litigants: the Court is sympathetic to Defendant’s willfulness arguments
and could have appointed mediators and/or legal counsel to assist
Defendant in raising this argument or otherwise pursuing an efficient
resolution of Sony’s claim.
While it can be daunting for many defendants to appear in federal
court or respond to service of process, the only wrong answer in such
circumstances is refusal to respond or to comply with court orders. You
can run from process servers, but you can’t hide from the law. Because
Defendant attempted to do so, his behavior was “objectively
unreasonable,” and a full award of costs will serve to “advance
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consideration of . . . deterrence” under the circumstances of this case.
Fogerty, 510 U.S. at 534 n.19. Defendant drove up Sony’s costs; now he
has to pay them. Because such costs are recoverable under 17 U.S.C.
§ 505, the Court GRANTS Sony’s request for costs in its entirety.
C. Sony fails to establish the required grounds for the
permanent injunction it seeks.
In addition to damages and costs, Sony asks the Court to
“permanently enjoin[] [Defendant] from copying, performing, or
otherwise exploiting ‘90mh’ in any manner.” ECF No. 33 at 16. Sony
provided no briefing on this request, and the Court is mindful that an
injunction “is not a remedy which issues as of course.” Harrisonville v.
W.S. Dickey Clay Mfg. Co., 289 U.S. 334, 337–38 (1933). Nevertheless,
Sony’s request is backed by clearly established law. See, e.g., 17 U.S.C.
§ 502(a) (“Any court having jurisdiction of a civil action arising under
this title may . . . grant temporary and final injunctions on such terms
as it may deem reasonable to prevent or restrain infringement of a
copyright.”).
In infringement cases, “[c]ourts have traditionally granted
permanent injunctions[] if liability is established and a continuing
threat to the copyright exists.” Fermata Intern. Melodies, Inc. v.
Champions Golf Club, Inc., 712 F. Supp. 1257, 1262 (S.D. Tex. 1989)
(Hittner, J.) (collecting cases). Defendant’s liability has been established
here. See ECF No. 25. And Defendant’s consistent unresponsiveness and
evasive maneuvers—as well as his defiance of this Court’s orders—
suggest Sony’s copyrights may be continuously imperiled without
permanent injunctive relief. However, as explained below, the Court
shares many of Defendant’s reservations regarding Sony’s requested
injunction. See ECF No. 3 at 2.
“The purpose of copyright law is to promote and protect creativity.”
Alcatel USA, Inc. v. DGI Techs., Inc., 166 F.3d 772, 787 (5th Cir. 1999).
While injunctions are extraordinary remedies and are typically
disfavored, that fundamental purpose is disserved if the Court does not
ensure Sony’s copyrights are protected moving forward. See id.; see also
EMI April Music, Inc. v. Jet Rumeurs, Inc., 632 F. Supp. 2d 619, 624
n.17 (N.D. Tex. 2008) (Lynn, J.) (collecting cases). But that purpose is
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equally disserved if the Court grants an injunction broader than
necessary to remedy infringement, especially if an injunction may have
a chilling effect on future creative expression. In this regard, “[i]t is well
established that a plaintiff’s remedy must be tailored to redress the
plaintiff’s particular injury.” Cargill v. Garland, 57 F.4th 447, 472 (5th
Cir. 2023). And Sony’s requested remedy goes further than necessary
considering the facts of this case.
Sony’s request for injunctive relief has two prongs. First, Sony asks
the Court to “permanently enoin[] [Defendant] from copying,
performing, or otherwise exploiting ‘90mh’ in any manner.” ECF No. 33
at 16. Should Defendant fail to comply with that injunction, Sony asks
the Court to award “50% of Defendant’s future revenues connected to
the ‘90mh’ musical composition” to SMP as part of SMP’s actual
damages. Id. Likewise, Sony asks the Court to award “20% of
Defendant’s future revenues connected to the ‘90mh’ sound recording”
to SME as part of SME’s actual damages. Id. Second, Sony asks the
Court to require Defendant to “register with the American Society of
Composers, Authors and Publishers (“ASCAP”) and provide any
resulting earnings to Plaintiff [SMP] as part of SMP’s damages pursuant
to 17 U.S.C. § 504(b).” Id. The Court addresses both prongs of Sony’s
requested injunction below.
1. Sony’s proposed injunction is unnecessary because damages
mitigate the risk and remedy the harm of any future
infringement.
“To establish entitlement to permanent injunctive relief in copyright
infringement cases, the party seeking the injunction must demonstrate
the following: (1) actual success on the merits; (2) no adequate remedy
at law; (3) that the threatened injury outweighs any damage to the
defendant; and (4) the injunction will not disserve the public interest.”
Broadcast Music, 11 F. Supp. 3d at 696 (internal quotation marks and
citations omitted). In the infringement context, these standard
injunctive-relief factors are evaluated with an eye toward preventing
future infringements. “In short, an injunction is appropriate if liability
has been established and if there is a continuing threat of future
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infringement of Plaintiffs’ copyrights.” Id. (citing Fermata, 712 F. Supp.
at 1262).
There is a degree of tension in the Court’s precedents on this point.
On the one hand, “[c]ourts have traditionally granted permanent
injunctions[] if liability is established and a continuing threat to the
copyright exists.” Fermata, 712 F. Supp. at 1262. On the other,
injunctions are extraordinary remedies and are inappropriate absent a
showing of irreparable harm. See Broadcast Music, 11 F. Supp. 3d at
696; see also Sampson v. Murray, 415 U.S. 61, 90 (1974) (“The key word
in this consideration is irreparable. Mere injuries, however substantial,
. . . are not enough. The possibility that adequate compensatory or other
relief will be available at a later date . . . weighs heavily against a claim
of irreparable harm.”). Sony’s request typifies this issue: in the very
same pleading, Sony requests a permanent injunction (which requires
an irreparable injury) and pleads alternative damages should
Defendant fail to comply (which shows the injury is reparable). For these
reasons, the Court must deny such extraordinary equitable relief here.
In many respects, this case mirrors the facts in Broadcast Music,
where the court denied injunctive relief. See 11 F. Supp. 3d at 697. In
that case, the court noted that “past willful infringements [] do[] not
establish a continuing threat of future infringement.” Id. Here,
Defendant makes a compelling case that his infringements of Sony’s
copyrights were not willful. See ECF Nos. 20, 39. While his evasiveness
in litigation gives cause for concern regarding his willingness to comply
with the law, such evasiveness does not prove Defendant will continue
to infringe Sony’s copyrights—especially considering the sizable
damages he’ll now have to pay for his infringement. In this regard, the
Court hopes this case will serve as a $802,997.23 lesson for Defendant
in carefully selecting the materials included in his raps.
Still, 90mh is publicly available on streaming platforms and Trefuego
continues performing, which puts Sony’s copyrights in jeopardy. See
ECF No. 33 at 7. The Court would chill future creative expression and
undermine the fundamental purposes of copyright law if it enjoined
Defendant from any future use of 90mh. But the Court is dutybound to
protect Sony’s intellectual property. Johnson, 776 F. Supp. 2d at 238.
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This duty is satisfied by Sony’s alternative request for damages in the
event of future infringement. See ECF No. 33 at 16. Accordingly, because
the pleadings establish that damages would remedy any future harm,
the Court DENIES the injunction Sony requests. However, insofar as
Sony’s copyrights are jeopardized by 90mh’s public availability, some
form of injunctive relief is appropriate. “In shaping equity decrees, the
trial court is vested with broad discretionary power.” Lemon v.
Kurtzman, 411 U.S. 192, 200 (1973) (citation omitted). Exercising that
discretion here, the Court ORDERS as follows:
Defendant
Dantreal
Daevon-Clark
Rainbolt
is
PERMANENTLY ENJOINED from copying, performing
or otherwise exploiting 90mh without (1) paying 50% of
revenues connected to the 90mh musical composition to
Plaintiff Sony Music Publishing (US) LLC, and (2) paying
20% of revenues connected to the 90mh sound recording to
Plaintiff Sony Music Entertainment. Nothing herein shall
be construed as limiting or otherwise altering the Parties’
ability to contract for additional terms and conditions
related to Defendant’s continued copying, performing, or
exploitation of the relevant track. In the event that a
subsequently executed agreement among the
Parties differs from a condition set herein, such as
in the permitted scope of Defendant’s use of 90mh or
in the percentages to be paid to Plaintiffs for such
use, the terms and conditions of the contract shall
supersede and override the terms of this Order.
The Court now turns to Sony’s request that the Court force Defendant
to register with ASCAP as part of his overarching damages obligation.
2. Requiring Defendant to register with ASCAP is unnecessary to
prevent future infringement.
The second prong of Sony’s requested injunction would force
Defendant to register with ASCAP and provide any resulting earnings
from past infringement to the appropriate plaintiff. See ECF No. 33 at
16. Defendant objects that this requirement “infringes upon [his]
autonomy and potentially exceeds the alleged infringement’s scope.”
ECF No. 39 at 2. The first objection holds no water, as every injunction
necessarily “infringes the autonomy” of the enjoined party; that
unavoidable consequence does not speak to the injunction’s propriety.
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But the second objection merits careful consideration, as “a plaintiff’s
remedy must be tailored to redress the plaintiff’s particular injury.”
Cargill, 57 F.4th at 472.
The Copyright Act empowers the Court to issue “temporary and final
injunctions on such terms as it may deem reasonable to prevent or
restrain infringement of a copyright.” 17 U.S.C. § 502(a). Under the
express terms of the Act, the proposed injunction must be reasonable to
the specific goal of preventing/restraining copyright infringement. Here,
Sony’s proposal would perhaps uncover additional damages, but nothing
in the pleadings suggests it is necessary to prevent or restrain further
infringement of Sony’s copyrights—particularly considering the Court’s
award of damages and costs and its injunction vis-à-vis continued use of
90mh without compensation to Sony. Injunctions are an “extraordinary
remedy” that are “never awarded as of right.” Winter v. Nat. Res. Def.
Council, Inc., 555 U.S. 7, 24 (2008). As such, plaintiffs don’t get an
injunction merely because it would be a good idea; they must make an
exacting showing that the remedy is necessary. See id. Because Sony
has not done so here, the Court DENIES its second proposal for
injunctive relief.
CONCLUSION
For the reasons discussed above, the Court determines that Sony’s
Motion (ECF No. 33) should be and hereby is GRANTED in part and
DENIED in part. Accordingly, the Court ORDERS as follows:
•
Plaintiffs are awarded $802,997.23 in damages, including
the $14,078.82 currently being held by third-party distributor
DistroKid;
•
•
Plaintiffs are awarded $2,230.67 in costs; and
Defendant Dantreal Daevon-Clark Rainbolt is
PERMANENTLY
ENJOINED
from
copying,
performing or otherwise exploiting 90mh without (1)
paying 50% of revenues connected to the 90mh musical
composition to Plaintiff Sony Music Publishing (US)
LLC, and (2) paying 20% of revenues connected to the
90mh sound recording to Plaintiff Sony Music
Entertainment. Nothing herein shall be construed as
limiting or otherwise altering the Parties’ ability to
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contract for additional terms and conditions related to
Defendant’s continued copying, performing, or
exploitation of the relevant track. In the event that a
subsequently executed agreement among the
Parties differs from a condition set herein, such
as in the permitted scope of Defendant’s use of
90mh or in the percentages to be paid to Plaintiffs
for such use, the terms and conditions of the
contract shall supersede and override the terms
of this Order.
SO ORDERED on this 27th day of March 2024.
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